Lets assume that 100% the Duke is right? What are the ramifications? Who will really care? Serious question.
The short answer is there are no ramifications. Assuming he is 100%, it will not make a difference.
Although our esteemed colleague likes to use the word "fraud," he is failing to realize that such word has a precise legal definition and necessary elements. Even if Randolph is 100% correct, he will not be able to show that the references to Gill or the specific date of first use were material to the granting of the trademark.
A party alleging fraud in a TM filing has the burden of proving not only that factual representations made to the USPTO were false, but also that the representations were material to obtaining the TM and that there was a willful intent to deceive the USPTO.
“The Trademark Board has consistently held that a misstatement of the date of first use in an application for registration is not fraudulent as long as there has been some use of the mark prior to the filing date.â€
Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 1425 (D. Minn. 1989). "The claim of a date of first use is not a material allegation as long as the first use in fact preceded the application date.â€
Pony Express Courier Corp. v. Pony Express Delivery Service, 872 F.2d 317 (9th Cir. 1989). Put simply and generally speaking, the date and circumstances of first use are not material to the USPTO's decision regarding registration of a TM as long as the requested mark is currently use upon application.
Regardless of materiality and even assuming our colleague's facts are correct, he will also have an exceedingly difficult time proving the required intent to deceive:
"A third party may petition to cancel a registered trademark on the ground that the registration was obtained fraudulently. Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application. A party seeking cancellation of a trademark registration for fraudulent procurement bears a heavy burden of proof. Indeed, the very nature of the charge of fraud requires that it be proven 'to the hilt' with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.
Mandated by the statute and caselaw, the Board had consistently and correctly acknowledged that there is a material legal distinction between a 'false' representation and a 'fraudulent' one, the latter involving an intent to deceive, whereas the former may be occasioned by a misunderstanding, an inadvertence, a mere negligent omission, or the like. In other words, deception must be willful to constitute fraud."
In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009) (internal citations and quotation marks omitted). As noted by one prominent authority, "the bottom line after
Bose is that it is nearly impossible to prove a claim of fraud before the USPTO." 3-11 Gilson on Trademarks § 11.08.
So although it has been fun to follow the tilting at windmills and a small part of me admires the devotion, I hope that anyone waiting for Randolph's efforts to result in a finding of fraud relating to the TM registration of 12th Man is not holding their breath.
